Vnus Medical Technologies Inc. v. Biolitec, Inc. et al, No. 3:2008cv03129 - Document 257 (N.D. Cal. 2010)
Court Description: ORDER DENYING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT THAT ASSERTED '433 AND '970 CLAIMS ARE INVALID FOR LACK OF WRITTEN DESCRIPTION. Signed by Judge Maxine M. Chesney on August 3, 2010. (mmclc1, COURT STAFF) (Filed on 8/3/2010)
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Vnus Medical Technologies Inc. v. Biolitec, Inc. et al Doc. 257 1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE NORTHERN DISTRICT OF CALIFORNIA 8 9 For the Northern District of California United States District Court 10 TYCO HEALTHCARE GROUP LP d/b/a VNUS MEDICAL TECHNOLOGIES 13 ORDER DENYING DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT THAT ASSERTED ‘433 AND ‘970 CLAIMS ARE INVALID FOR LACK OF WRITTEN DESCRIPTION Plaintiff 11 12 No. C-08-3129 MMC v. BIOLITEC, INC., et al., Defendants 14 / 15 16 Before the Court is defendants “Motion for Summary Judgment that the Asserted 17 ‘433 and ‘970 Claims are Invalid for Lack of Written Description,” filed June 25, 2010. 18 Plaintiff Tyco Healthcare Group LP has filed opposition, to which defendants have replied. 19 Having read and considered the papers filed in support of and in opposition to the motion, 20 the Court rules as follows.1 21 22 BACKGROUND In the instant action, plaintiff alleges defendants have infringed the claims of U.S. 23 Patent Nos. 6,769,433 (“‘433 Patent”) and 7,406,970 (“‘970 Patent”). By the instant motion, 24 defendants argue they are entitled to summary judgment on their respective counterclaims 25 that Claims 1, 2, and 10 of the ‘433 Patent and Claims 1, 2, 3, 8, 9, 13, 15, 17, 19 and 20 of 26 the ‘970 Patent are invalid for failure to satisfy the written description requirement in 35 27 U.S.C. § 112. 28 1 By a Clerk’s notice filed July 22, 2010, the matter was taken under submission. Dockets.Justia.com 1 Claim 1 of the ‘433 Patent is an independent claim that claims a “method of applying 2 energy to a vein to cause the vein to durably assume a reduced diameter,” specifically, a 3 method comprising the following steps: (1) “introducing a catheter having a working end 4 into a vein having an inner wall”; (2) “pre-shaping the vein such that the inner wall of the 5 vein is brought toward the working end of the catheter so as to reduce the diameter of the 6 vein”; (3) “applying energy from the working end of the catheter to the vein so as to cause 7 the vein to durably assume a diameter of at least as small as the reduced diameter 8 achieved in the step of pre-shaping the inner wall of the vein toward the working end of the 9 catheter”; and (4) “moving the catheter along the vein during the step of applying energy.” 10 See ‘433 Patent, col. 19, ll. 15-30. Claim 2 of the ‘433 Patent claims the method of Claim 1 11 with the additional limitation that “a lengthy occlusion is formed along the area of the vein in 12 which the catheter is moved.” See ‘433 Patent, col. 19, ll. 31-33. Claim 10 of the ‘433 13 Patent claims the method of Claim 1 with the additional limitation that the “energy” that is 14 applied is “light energy.” See ‘433 Patent, col. 19, ll. 50-51. 15 Claim 1 of the ‘970 Patent is an independent claim that claims a “method of treating 16 venous insufficiency,” specifically, a method comprising the following steps: (1) 17 “introducing an elongate member into a vein having an inner wall”; (2) “flattening the vein 18 such that the inner wall of the vein is brought toward a distal region of the elongate 19 member”; (3) “applying energy from the distal region of the elongate member to the vein to 20 create a thermal effect in the vein so as to reduce the diameter of the vein and lead to 21 occlusion of the vein”; and (4) “retracting the elongate member along the vein during the 22 step of applying energy.” See ‘970 Patent, col. 18, ll. 53-64. Claim 2 of the ‘970 Patent 23 claims the method of Claim 1 with the additional limitation that “a lengthy occlusion is 24 formed along the area of the vein in which the elongate member is retracted during the step 25 of applying energy.” See ‘970 Patent, col. 18, ll. 65-68. Claim 3 of the ‘970 Patent claims 26 the method of Claim 1 with an additional step, specifically, “delivering fluid to the vein 27 where the distal region of the elongate member is located.” See ‘970 Patent, col. 19, ll. 1- 28 3. Claim 8 of the ‘970 Patent claims the method of Claim 1 with the additional limitation 2 1 that the “energy” applied is “light energy.” See ‘970 Patent, col. 19, ll. 9-11. Claim 9 claims 2 the method of claim 8 with the additional limitations that the “elongate member” is “a fiber 3 optic” and that the “light energy” is applied with “the fiber optic.” See ‘970 Patent, col. 19, ll. 4 16-17. Claim 13 of the ‘970 Patent claims the method of Claim 1 with the additional 5 limitation that the “flattening” step includes the step of “compressing the anatomy 6 surrounding the vein at the location of the distal region of the elongate member.” See ‘970 7 Patent, col. 19, ll. 28-31. Claim 15 of the ‘970 Patent is an independent claim that claims a “method of treating 8 9 venous insufficiency,” specifically, a method comprising the following steps: 10 (1) “introducing an elongate member having an axis into a vein having an inner wall”; 11 (2) “moving the inner wall of the vein toward the axis of the elongate member at a distal 12 region of the elongate member, independently of the elongate member”; (3) “applying 13 energy from the distal region of the elongate member to the vein to create a thermal effect 14 in the vein so as to reduce the diameter of the vein and lead to occlusion of the vein”; and 15 (4) “retracting the elongate member along the vein during the step of applying energy to 16 form an occlusion along the area of the vein where the elongate member is retracted during 17 the step of applying energy.” See ‘970 Patent, col. 20, ll. 3-17. Claim 17 of the ‘970 Patent 18 claims the method of Claim 15 with the additional limitation that the “moving” step includes 19 the step of “compressing the anatomy surrounding the vein at the location of the distal 20 region of the elongate member.” See ‘970 Patent, col. 20, ll. 21-24. Claim 19 of the ‘970 21 Patent claims the method of Claim 15 with the additional limitation that the energy applied 22 is “light energy.” See ‘970 Patent, col. 28-29. Claim 20 of the ‘970 Patent claims the 23 method of claim 19 with the additional limitations that the “elongate member” is “a fiber 24 optic” and that the “light energy” is applied with “the fiber optic.” See ‘970 Patent, col. 20, ll. 25 30-32. 26 The specifications of the ‘433 and ‘970 Patents are identical to each other, and each 27 is identical to the 1997 application from which both patents are derived. (See Steenburg 28 Decl. Ex. 58.) 3 DISCUSSION 1 2 Section 112 provides that a “specification shall contain a written description of the 3 invention.” See 35 U.S.C. § 112, ¶ 1. “Adequate written description means that the 4 applicant, in the specification, must convey with reasonable clarity to those skilled in the art 5 that, as of the filing date sought, he or she was in possession of the claimed invention.” 6 Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009) 7 (internal quotation, citation and alteration omitted). Stated otherwise, the specification 8 “considered as a whole must convey to one of ordinary skill in the art, either explicitly or 9 inherently, that [the inventor] invented the subject matter claimed in the [ ] patent.” See 10 Reiffin v. Microsoft Corp., 214 F.3d 1342, 1346 (Fed. Cir. 2000). “[W]hatever the specific 11 articulation, the test requires an objective inquiry into the four corners of the specification 12 from the perspective of a person of ordinary skill in the art.” Ariad Pharmaceuticals, Inc. v. 13 Eli Lilly and Co., 598 F.3d 1336, 1351 (2010). “[C]ompliance with the ‘written description’ 14 requirement of § 112 is a question of fact.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 15 1563 (Fed. Cir. 1991). 16 Because patents are presumed valid, a party seeking to invalidate a patent by 17 summary judgment must demonstrate it is undisputed that “clear and convincing evidence” 18 exists to establish the inventor did not comply with the written description requirement, see 19 ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1376 (Fed. Cir. 2009), 20 specifically, that no trier of fact could reasonably find the specification “conveyed with 21 reasonable clarity to those of ordinary skill in the art that [the inventor] has in fact invented 22 the [invention] recited in [the] claims,” see Vas-Cath, 935 F.2d at 1567 (reversing order 23 granting summary judgment of invalidity for failure to comply with written description 24 requirement in light of triable issues of fact). 25 As noted, defendants argue that three claims of the ‘433 Patent and ten claims of 26 the ‘970 Patent are invalid for failure to comply with the written description requirement. In 27 their motion, defendants characterize plaintiff’s infringement contentions as follows: 28 “[Plaintiff] alleges that defendants indirectly infringe the ‘433 and ‘970 claims when, inter 4 1 alia, they sell single fiber optic lines that doctors place inside veins and use to apply laser 2 energy. [Plaintiff] focuses particular attention on ordinary bare-tip laser fibers . . . . ” (See 3 Defs.’ Mot. at 2:25-28 (internal citation omitted).) With respect to the issue of invalidity, 4 defendants argue the subject claims are “invalid because a person of ordinary skill in the 5 art reading the September 1997 application on which the patents are based would not 6 understand the invention to include applying energy to veins by means of a single bare-tip 7 fiber.” (See id. at 3:12-14 (internal citation omitted).) In other words, defendants’ theory is 8 that a person of ordinary skill in the art, having read the specification, would not understand 9 the applicant to have invented a method of applying energy to veins in the manner 10 employed by the accused products, specifically, a single bare-tip fiber, and, consequently, 11 the subject claims are invalid. 12 As plaintiff correctly notes, the Federal Circuit has held that “[t]he invention is, for 13 purposes of the ‘written description’ inquiry, whatever is now claimed [in the patent].” See 14 Vas-Cath, 935 F.2d at 1664 (emphasis in original). Consequently, for purposes of the 15 written description requirement, the issue is not whether a specification provides an 16 adequate description of an accused product, but, rather, whether the specification provides 17 an adequate description of the claimed invention. For example, in Moba, B.V. v. Diamond 18 Automation, Inc., 325 F.3d 1306 (Fed. Cir. 2003), where the plaintiff had alleged 19 defendant’s customers infringed plaintiff’s claimed method for “lifting eggs” when those 20 customers used defendant’s “moving conveyor,” the Federal Circuit found unpersuasive 21 defendant’s “contention that the [subject] patent does not adequately disclose lifting eggs 22 from a moving conveyor,” for the reason that such argument “merely revive[d] its non- 23 infringement argument in the cloak of a validity challenge.” See id. at 1321 (affirming jury’s 24 finding that patent claiming method to lift eggs was “not invalid for lack of an adequate 25 written description”); see also, e.g., Inline Connection Corp. v. Earthlink, Inc., 684 F. Supp. 26 2d 496, 528, 531 (D. Del. 2010) (holding “written description analysis examines whether the 27 inventor possessed the claimed invention, not whether he possessed or invented the 28 accused technology”; rejecting defendant’s arguments that claims were invalid because 5 1 2 specification did not “teach anything” about defendant’s accused product). The cases on which defendants rely address whether a particular claim element is 3 adequately described in the specification. See, e.g., PowerOasis, Inc. v. T-Mobile USA, 4 Inc., 522 F.3d 1299, 1307-11 (Fed. Cir. 2008) (determining whether specification 5 adequately described claimed “customer interface” element). Here, by contrast, 6 defendants fail to identify any particular claim element(s) not adequately disclosed. Rather, 7 as discussed above, defendants argue that the specification does not disclose use of 8 “single bare-tipped fiber.” None of the claims of the ‘433 or the ‘970 Patents, however, 9 include a limitation requiring the person performing the method use a “single bare-tipped 10 fiber” to apply energy. Consequently, defendant’s argument is misplaced, at least when 11 raised in support of a contention that the claims are invalid for lack of an adequate written 12 description. See Phillips Petroleum Co. v. United States Steel Corp., 673 F. Supp. 1278, 13 1290-91 (D. Del. 1987) (rejecting defendant’s argument that patent inventing “crystalline 14 polypropylene” molecules was invalid for failure to “describe” molecules with particular 15 viscosity and weight of accused products; noting claims did not “contain[ ] a limitation 16 regarding intrinsic viscosity or molecular weight,” and, consequently, defendant’s 17 contentions were “immaterial” with respect to whether claims were adequately described), 18 aff’d, 865 F.2d 1247, 1251-52 (Fed. Cir. 1989) (affirming district court; characterizing 19 defendant’s argument as “relat[ing] to infringement, not to patentability”). 20 Accordingly, defendant has not shown it is undisputed that Claims 1, 2, and 10 of the 21 ‘433 Patent and Claims 1, 2, 3, 8, 9, 13, 15, 17, 19 and 20 of the ‘970 Patent, or any of 22 them, are invalid for failure to satisfy the written description requirement. CONCLUSION 23 24 For the reasons stated above, defendants’ the motion is hereby DENIED. 25 IT IS SO ORDERED. 26 27 Dated: August 3, 2010 MAXINE M. CHESNEY United States District Judge 28 6
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